After the Gold Rush: Patent Law and Biological Inventions
Law in Context, Vol. 24, No. 1, 2006
Posted: 15 Aug 2006 Last revised: 23 Aug 2016
Date Written: 2006
In response to scientific breakthroughs in biotechnology, the development of new technologies, and the demands of a hungry capitalist marketplace, patent law has expanded to accommodate a range of biological inventions. There has been much academic and public debate as to whether gene patents have a positive impact upon research and development, health-care, and the protection of the environment.
In a satire of prevailing patenting practices, the English poet and part-time casino waitress, Donna MacLean, sought a patent application - GB0000180.0 - in respect of herself. She explained that she had satisfied the usual patent criteria - in that she was novel, inventive, and useful:
It has taken 30 years of hard labor for me to discover and invent myself, and now I wish to protect my invention from unauthorized exploitation, genetic or otherwise. I am new: I have led a private existence and I have not made the invention of myself public. I am not obvious (2000: 18).
MacLean said she had many industrial applications. 'For example, my genes can be used in medical research to extremely profitable ends - I therefore wish to have sole control of my own genetic material' (2000: 18). She observed in an interview: 'There's a kind of unpleasant, grasping, greedy atmosphere at the moment around the mapping of the human genome ... I wanted to see if a human being could protect their own genes in law' (Meek, 2000).
This special issue of Law in Context charts a new era in the long-standing debate over biological inventions. In the wake of the expansion of patentable subject matter, there has been great strain placed upon patent criteria - such as 'novelty', 'inventive step', and 'utility'. Furthermore, there has been a new focus upon legal doctrines which facilitate access to patented inventions - like the defence of experimental use, the 'Bolar' exception, patent pooling, and compulsory licensing. There has been a concerted effort to renew patent law with an infusion of ethical principles dealing with informed consent and benefit sharing. There has also been a backlash against the commercialisation of biological inventions, and a call by some activists for the abolition of patents on genetic inventions.
This collection considers a wide range of biological inventions - ranging from micro-organisms, plants and flowers and transgenic animals to genes, express sequence tags, and research tools, as well as genetic diagnostic tests and pharmaceutical drugs. It is thus an important corrective to much policy work, which has been limited in its purview to merely gene patents and biomedical research. This collection compares and contrasts the various approaches of a number of jurisdictions to the legal problems in respect of biological inventions. In particular, it looks at the complexities of the 1998 European Union Directive on the Legal Protection of Biotechnological Inventions, as well as decisions of member states, such as the Netherlands, and peripheral states, like Iceland. The edition considers US jurisprudence on patent law and policy, as well as recent developments in Canada. It also focuses upon recent developments in Australia - especially in the wake of parallel policy inquiries into gene patents and access to genetic resources.
Introduction After the Gold Rush: Patent Law and Biological Inventions Matthew Rimmer
1. European Bio-Protection Laws: Rebels with a Cause Margaret Llewelyn
2. Essential Derivation, Law, and the Limits of Science Jay Sanderson
3. Rules v. Standards for Patent Law in the Plant Sciences Mark D. Janis
4. Wind of Change: In re. Fisher and the Evolution of the American Biotechnology Patent Law Yann Joly
5. Cooperative Strategies for Facilitating Use of Patented Inventions in Biotechnology Dianne Nicol and Janet Hope
6. Something is Rotten in the State of Iceland: DeCODE Genetics, Population Research and Informed Consent Jennifer French
7. Regulating Access to Biological Resources: The Market Failure for Biodiversity Conservation Charles Lawson
Keywords: Patent Law, Biotechnology, Genetics, Micro-organisms, Plants, Animals, Research Tools, the Anti-Commons, Benefit-Sharing and Informed Consent.
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